The unprecedented expansion of
the Internet domain name space, until now dominated by .com and a handful of
other generic top-level domains (gTLDs), is likely to disrupt existing
strategies for trademark protection on the web.
“Trademark owners have been
facing significant uncertainty in the expansion of the Domain Name System (DNS)
while at the same time working with reduced protection budgets,” said WIPO
Director General Francis Gurry. “The proliferation of potential web addresses,
with the expected roll-out of 1,400 new gTLDs, will force trademark owners to
adjust their priorities in terms of registration and protection choices,” he
added.
In 2013, 2,585 cybersquatting
cases based on the UDRP (Uniform Domain Name Dispute Resolution Policy) were
filed with the WIPO Arbitration and Mediation Center (WIPO Center). Reflecting
a trend across the UDRP, this number represented a 10.4% decrease from the 2012
record level. At the same time, the number of domain names in WIPO cases rose
by 22% from the 2012 level to 6,191, the most domain names included in WIPO
cases in a single year. (Annex 1) Certain trademark owners made savings by
grouping larger numbers of domain names in single cases. The total number of
domain names in over 28,000 UDRP-based WIPO cases received since 1999 rose to
51,500.
2013 also saw the WIPO Center
active in administering cases under the Legal Rights Objection (LRO) procedure.
With substantive input by WIPO, this new mechanism aimed to safeguard
third-party trademark rights corresponding to an applied-for new gTLD. In
September 2013, the WIPO Center posted the expert panel decision in the last of
69 cases that it administered. All expert panel decisions and a December 2013
WIPO report on the LRO process are available online.
With the first new gTLDs having
become operational, attention is now focusing on registrations in these
domains. On February 11, 2014 the WIPO Center received the first UDRP case in
relation to a new domain. This and other new gTLD cases now being filed with
the WIPO Center will provide insight into how brand owners spend legal budgets
in the new domains.
Updated WIPO Rules
In the area of IP and technology
dispute resolution, the WIPO Center in 2013 undertook a review of the WIPO
Mediation and (Expedited) Arbitration Rules (WIPO Rules). Informed by WIPO case
experience and by the global evolution of ADR practices, the updated WIPO Rules
will enter into effect on June 1, 2014.
“The WIPO Rules have proven a
robust yet flexible framework for resolving IP and technology disputes for
parties and neutrals alike,” said Mr. Gurry. “The update of the Rules serves
the WIPO Center’s goal to provide economical and productive dispute resolution
procedures,” he said. “The latest provisions, for example on emergency relief
and multiparty arbitration, ensure that the WIPO Rules respond to the evolution
of technology, business, and legal conditions,” the Director General added.
In a separate development, the
WIPO Center in December 2013 made available tailored model agreements that
companies involved in the telecom industry may use to refer a dispute
concerning the fair, reasonable and non-discriminatory (FRAND) terms to WIPO
Mediation and (Expedited) Arbitration. Aiming to facilitate cost- and time-effective
FRAND adjudication, these model agreements were developed in consultation with
patent law, standardization and arbitration experts from various jurisdictions,
including some members and the Secretariat of the European Telecommunication
Standards Institute (ETSI).
“We have seen some of the top
filers under WIPO’s Patent Cooperation Treaty involved in smartphone wars in
multiple jurisdictions,” said Mr. Gurry. “At the same time competition
authorities in the United States and Europe are encouraging parties to resolve
their disputes through ADR. By providing such an option, WIPO hopes to be of
assistance to IP producers and consumers alike," he added. The WIPO Center
maintains a special list of mediators, arbitrators and experts for patents in
standards.
WIPO Arbitration and Mediation
Center - 2013 Review
Domain Name Dispute Resolution
WIPO cases in 2013 were filed by
complainants and respondents from 109 countries. (Annex 2) Their cases were
decided by 327 WIPO panelists from 50 countries, with 14 different languages of
proceedings, namely (in order of frequency) English, Spanish, Chinese, French,
German, Dutch, Portuguese, Turkish, Italian, Korean, Romanian, Russian,
Japanese, and Swedish.
Among WIPO cases in 2013, country
code Top-Level Domains (ccTLDs) accounted for almost 13% of filings, up 1% from
the previous year, with 70 national domain registries now connected to WIPO
domain name dispute resolution services. In 2013, the WIPO Center became a
provider for the .FM (Micronesia (Federated States of)), .GD (Grenada), and .ML
(Mali) domain spaces.
The top three areas of
complainant activity in 2013 remained retail, fashion, and banking and finance.
Annex 3 The caseload featured many well-known names from business as well as
public interest sectors, such as universities. Annex 4 Of the gTLD cases filed
with WIPO in 2013, 66.4% concerned registrations in the .com domain, down by
8.5% in UDRP share, with .org and .net somewhat increasing theirs. Annex 5
Filings related to fashion and luxury brands again included cases where brand
owners allege counterfeiting via the web pages under the domain name.
Parties settled around one out of
five WIPO cases before reaching panel decision, resulting in a refund to filing
parties of the panel fees. In 91% of cases ending with a panel decision, WIPO
panels in 2013 ordered the transfer of the domain name to the trademark owner.
To assist their case preparation,
WIPO parties took advantage of the Legal Index of WIPO UDRP Decisions and the
Overview of WIPO Panel Views on Selected UDRP Questions. The same online tools
also serve the predictability of WIPO panel decisions.
New Generic Top Level Domains
During 2012, a variety of
organizations and companies submitted to ICANN over 1,930 applications for some
1,400 distinct new domains as part of ICANN’s New gTLD Program. This included
116 applications for a total of 12 different language scripts using the Internationalized
Domain Name (IDN) system. Delegation of the first new gTLDs into the Internet’s
Root Zone took place in October 2013 and in early March had passed 160.
The WIPO Center assisted ICANN in
the establishment of the substantive criteria for the LRO mechanism. The window
for filing LRO objections closed in March 2013, with the Center receiving 69
LRO objections found to be procedurally compliant. The geographical spread of
the filed LROs covered objectors from 11 jurisdictions and applicants from 17
jurisdictions. Annex 6 The WIPO Center notified the first LRO determinations to
the parties in July 2013, and completed all LRO processing by early September
2013. In total, the WIPO Center appointed 49 expert panelists to the LRO cases.
The appointed panelists spanned 17 nationalities, and between them had decided
more than 6,000 WIPO UDRP decisions.
In a summary of panel findings,
the WIPO LRO report notes that an overwhelming majority of LROs were filed
against applications for gTLD strings with descriptive or dictionary meaning.
Where a trademark owner has adopted a common dictionary term as a trademark,
LRO panels found that an applied-for gTLD focusing on such common meaning would
not as such violate the dispute resolution standards for LROs. Some panels
expressed an expectation that the LRO objector (the trademark owner) would
monitor future activity in the gTLD, with a view to possible later legal
action.
Where the applicant’s use of an
applied-for gTLD held potential for infringement, LRO panels focused on whether
such use was unfair, unjust or impermissible. This test reflects the particular
dynamics of the use of trademarks on the Internet.
The WIPO Center is in the process
of implementing the ICANN Post-Delegation Dispute Resolution Procedure. This
trademark-based mechanism aims to encourage responsible registry operator
conduct once a domain has become operational.
WIPO Arbitration and Mediation of
Intellectual Property and Technology Disputes
The WIPO Center administers IP
and technology disputes under the WIPO Mediation, Arbitration, Expedited
Arbitration Rules, and Expert Determination Rules. WIPO case parties include
large companies, small- and medium-sized enterprises, research organizations,
and universities. Their disputes before the WIPO Center have involved a range
of issues, such as patent infringement, patent licenses, information technology
transactions (including telecommunications), distribution agreements for
pharmaceutical and consumer products, copyright issues, research and
development agreements, trademark co-existence agreements, media-related
agreements, and disputes arising out of IP litigation settlement.
In addition to administering such
cases under the WIPO Rules, the WIPO Center also engages in policy activities for
the integration of ADR for Specific Sectors including franchising, information
and communication technology and the area of research and development and
technology transfer (R&D).
R&D and technology transfer
involve a multitude of transactions, including research contracts,
collaborative projects, licensing, joint ventures, alliances, spin-offs and
buyer-supplier relationships. Such collaborations can involve complex legal,
commercial or management issues. Research partners from different institutional
backgrounds may have diverging understandings of creating, using and exploiting
IP rights. Efficiency in R&D dispute resolution can contribute to the
continuation of research activities and commercialization of research results.
As a recent example of policy collaboration, in 2013 the Austrian Intellectual
Property Agreement Guide (IPAG) launched a set of model agreements including
WIPO ADR clauses.
The WIPO Center also offers
guidance to intellectual property offices (IPOs) seeking to establish
cost-effective dispute resolution frameworks. This activity follows the
establishment of a mediation option for trademark oppositions at the
Intellectual Property Office of Singapore (IPOS), under which a number of such
mediations have successfully settled.
Background on the WIPO
Arbitration and Mediation Center
Based in Geneva, Switzerland,
with an office in Singapore, the WIPO Arbitration and Mediation Center offers
Alternative Dispute Resolution options for the resolution of international
commercial disputes between private parties. The arbitration, mediation and
expert determination procedures provided by the WIPO Center are recognized as
particularly appropriate for technology, entertainment and other disputes
involving IP.
The WIPO Rules are generally
appropriate for all commercial disputes, and additionally feature provisions
addressing specific needs in IP disputes, such as confidentiality, evidence,
experiments, site visits, and trade secrets.
Committed to cost- and
time-efficiency, the WIPO Center closely tracks user expectations. Parties to
disputes submitted to the WIPO Center have the option of using the innovative
WIPO Electronic Case Facility (WIPO ECAF), which allows for secure filing, storing
and retrieval of case-related submissions in a web-based electronic case file,
by parties and neutrals anywhere in the world.
Background on the UDRP
The Uniform Domain Name Dispute
Resolution Policy (UDRP), which was proposed by WIPO in 1999 and has become
accepted as an international standard for resolving domain name disputes
outside the courts, is designed specifically to discourage and resolve the
abusive registration of trademarks as domain names, commonly known as
cybersquatting. Under the UDRP, a complainant must demonstrate that the
disputed domain name is identical or confusingly similar to its trademark, that
the respondent does not have a right or legitimate interest in the domain name
and that the respondent registered and uses the domain name in bad faith.
Disputes are decided by
independent panelists drawn from the WIPO Center’s global list of trademark
specialists. The domain name registration in question is frozen (suspended)
during the proceedings. After reviewing a case, panelists submit their decision
within a period of 14 days. If a panelist’s decision to transfer a domain name
is not challenged in a competent court within a period of ten business days,
the registrar is legally bound to implement the panelist’s decision. The entire
case normally takes no more than about two months.
The WIPO Center is the leading
global provider of domain name dispute resolution services and provides a range
of resources for users and the general public. An illustration of these
resources is the freely available WIPO jurisprudential Overview, which provides
a distillation of panel findings in the thousands of domain name cases filed
with WIPO. Parties, counsel and others around the world use this unique WIPO
tool to find their bearings in the growing cybersquatting jurisprudence.
Article as published in WIPO
http://www.wipo.int/pressroom/en/articles/2014/article_0003.html
